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Archive for: Art. 164 IPL

Trade mark law, case VI SA/Wa 122/12

November 27th, 2012, Tomasz Rychlicki

On 2004, JOOP! GmbH requested the Polish Patent Office to invalidate the right of protection for the word trade mark JUUPI ! R-103654 registered for goods in Class 3 and owned by “AQUAREL” Kosiorek Spółka Jawna. The German company argued that JUUPI ! is similar to its trade marks JOOP! R-64463 and JOOP! IR-73926 that were registered with the earlier priority. The PPO in its decision of 7 February 2006 no Sp. 323/04 dismissed the request. Joop! filed a complaint against this decision, but the Voivodeship Administrative Court in its judgment of 13 October 2006 case file VI SA/Wa 1339/06 dismissed it. Joop! decided to file a cassation complaint. The Supreme Administrative Court in its judgment of 5 July 2007 case file II GSK 98/07 overturned the judgment of the VAC and sent it back for further reconsideration. The SAC held that the PPO and the VAC misinterpreted the provisions of the Polish Industrial Property Law with regard to the knowledge and awareness of the requesting party on the use of the later trade mark for a period of five successive years. The Voivodeship Administrative Court in Warsaw in its judgment of 12 October 2007 case file VI SA/Wa 1403/07 re-examined the case in accordance with what has been determined by the Supreme Administrative Court. The case went back to the PPO. Meanwhile, JOOP! GmbH transferred the rights to JOOP! R-64463 and JOOP! IR-73926 to COTY B.V. COTY appointed its representative (advocate), who submitted to the case file properly paid power of attorney that authorized him to act in this particular case, together with a copy of the relevant register of companies, however it was not recorded in the minutes and documents offered have not been adopted in the case file, which also has not been recorded in the minutes of the hearing, because the Polish Patent Office did not consider these requests and documents as coming from the party of the proceedings. The PPO dismissed the request, and decided that opposed trade marks are not similar, and the reputation of JOOP! R-64463 has not been proven. COTY filed a complaint against this decision.

The Voivodeship Admiistrative Court in Warsaw in its judgment of 2 August 2012 case file VI SA/Wa 122/12 dismissed it and ruled that the existence of legitimacy to file a complaint is subject to examination by the administrative court. This is the basic step, the result of which depends on the further course of the proceedings. The finding by the court that the complaint to the administrative court was brought by a party without legitimacy to file such a complaint, resulting in dismissal of the complaint without examining the merits of the contested decision. The Court held that the transfer (assignment) of trade mark rights in the course of proceedings before the Court for invalidation of the right of protection for a trade mark, i.e. rights to a trade mark that was used as an opposing sign, does not create the right for the new owner to seek legal interest (locus standi) in this proceedings as a party to the proceedings.

Trade mark law, case VI SA/Wa 2041/11

February 15th, 2012, Tomasz Rychlicki

Sfinks Polska S.A. requested the Polish Patent Office to invalidate the rights of protection for word-figurative trade mark CLEOPATRA R-153234 owned by Restauracja CLEOPATRA Bachar Aziz from Lublin. Sfinks Polska owns earlier registered word-figurative trade mark SPHINX R-105162.

R-153234

Sfinks claimed that the trade mark CLEOPATRA R-153234 is similar to its trade mark and argued that it has legal interest in this proceedings as there is a possibility of misleading customers based on the similarity of trade marks. This could be particularly applicable considering the fact that SPHINX trade mark is already known on the market and, therefore, it has a stronger distinctive ability. Sfinks also argued that Bachar Aziz filed its trade mark in bad faith with an intent to use the reputation of Sfinks’ trade marks by suggesting a common origin from a single entity.

R-105162

The Polish Patent Office dismissed the request and decided that the trade marks, in this case, are different in all aspects. Sfinks Polska S.A. filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 27 December 2011 case file VI SA/Wa 112/11 dismissed it. The Court held that the PPO correctly decided that there are visible differences in both signs. The VAC also ruled that the application for a trade in bad faith may occur in a situation in which the applicant is linked with the owner of the earlier sign with a special relationship of trust resulting, for example, from cooperation contracts or agreements. The trade mark can be filed in bad faith in order to acquire a financial extortion from the owner of an earlier sign, or to gain control of that entity, or to force the conclusion of the license agreement, etc. The trade mark can be also filed in bad faith with the intention to block the use of the prior sign or in order to acquire of the market position of the holder of the earlier mark. However, the allegation of bad faith trade mark application has not been proven by Sfinks Polska S.A.

See also “Trade mark law, case VI SA/Wa 112/11“.

Trade mark law, case VI SA/Wa 1236/11

December 6th, 2011, Tomasz Rychlicki

LEK, tovarna farmacevtskih in kemicnih izdelkov filed a notice of opposition to a final decision of the Polish Patent Office on the grant of a right of protection for the word trade mark KETOGEL R-190416 registered for Polpharma S.A. for goods such as pharmaceuticals. LEK argued that KETOGEL is similar to its word trade mark KETONAL. The PPO dismissed the opposition, and LEK filed a complaint against this decision.

The Voivodeship Administrative Court in its judgment of 7 September 2011 case file VI SA/Wa 1236/11 dismissed it. The court noted that in case of the assesment of similarities between trade marks, the number of syllables, their sound and touch have the importance in deciding on phonetic similarity. Visual similarity is assessed in terms of number of words or letters in general, the number of words or letters of the same type, their shape, layout and color. Consequently, a sign containing an altered distinctive element, even if there is some resemblance to other parts, will not be similar. The Court took into account the specificity of the pharmaceutical market, and excluded the likelihood of confusion in this case.

Trade mark law, case VI SA/Wa 875/11

October 27th, 2011, Tomasz Rychlicki

Juliusz Marek Nabiałek who owns the word-figurative trade mark Platan R-210901, filed a request for invalidation of the word-figurative trade mark PLATANUS OGRODY NATURALNE R-210602 registered for Przemysław Sochański. Mr. Nabiałek claimed that both signs are similar and cause the risk of misleading the public as to the origin of goods and services, especially since most goods and services are identical.

R-210901

Mr. Sochański claimed that he cooperated with Mr. Nabiałek in years 2001-2005. He emphasized that Mr. Nabiałek, without his knowledge or consent registered the trade mark Platan in 1995, but it was the name of a company that was founded by Sochański. In March 2007, he learned about this registration when he was served with the cease and desist letter prohibiting the use of the name Platan. Therefore, Sochański applied on 15 March 2007, for the right of protection for PLATANUS OGRODY NATURALNE trade mark. Therefore, he thought that the request for invalidation is a malicious and solely personal action. Mr Nabiałek decided to narrow the request only for services in Class 42 such as services in architecture, biological research, advice on environment protection. The Polish Patent Office invalidated the right of protection. Sochański filed a complaint against this decision.

R-210602

The Voivodeship Administrative Court in Warsaw in its judgment of 3 October 2011 case file VI SA/Wa 875/11 overturned the decision of the Polish Patent Office and held it unenforceable. The Court ruled that both trade marks are not similar and the similarity of goods and services is reduced only to their common numbering according to the Nice Classification. The VAC ruled that there was violation of the provisions of the administrative procedure, because the PPO did not consider all of the evidence required to decide the case, and has not indicated why certain facts were accepted as proven, and why others were denied the credibility and probative value.

Trade mark law, case VI SA/Wa 1970/09

July 20th, 2011, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for the word-figurative trade mark Veraderm żel silikonowy R-167213 registered for goods in Class 5 and owned by P.A.D. Technologies Ltd. Spółka z o.o. The request was filed by the producer of Zerader gel, who claimed that the trade mark in question is similar to the name of its product and that the Polish company acted in bad faith.

R-167213

The Voivodeship Adminsitrative Court in its judgment of 15 January 2010 case file VI SA/Wa 1970/09 repealed the contested decision and held it unenforceable. The Court ruled that similarity of signs cannot serve as a basis in recognition of bad faith. The Court also noted that the oppositon was brought after the prescribed term has expired and there was no adequate justification for it. Such formal errors lead to the outcome of the judgment.

Trade mark law, case VI SA/Wa 785/10

January 4th, 2011, Tomasz Rychlicki

Unilever N.V., the owner of the word trade mark SOLERO IR-0622723 and the word-figurative trade mark SOLERO IR-0628636, has requested the Polish Patent Office to invalidate the right of protection for the trade mark SOLEY R-129356 owned by the Polish company Maria Ziębińska, Stanisław Ziębiński “ICE MASTRY” sp. j. from Czaniec. Unilever claimed that the questioned sign is similar to its earlier registered well-known trade marks and that the Polish company acted in bad faith while applying for the right of protection because in 1997-2001, Unilever and ICE MASTRY were involved in two civil suits (case files V GC 252/97 and V GC 217/98) that have ended in a settlement in which the Polish company commited to discontinue use of the signs SOLER, Soller and SOLLEI. The PPO invalidated the right of protection. ICE MASTRY filed a complaint against this decision.

IR-0628636

The Voivodeship Administrative Court in Warsaw in its judgment of 4 October 2010 case file VI SA/Wa 785/10 held that the date of application for registration under Article 11 of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments, determines the priority of the right of protection associated with the applied sign (prior tempore potior jure). These provisions still apply in cases where the trade mark has been applied for registration when the old Act was in force. Thus, by this date all subjective and objective issues related to the right applied for protection must also be assessed, in particular,and whether the applicant has the right to the sign.

Article 11.
Subject to Article 12, priority for obtaining the right deriving from registration of a trademark shall be determined on the basis of its regular filing for registration with the Patent Office.

The Court also noted that the TMA, as well as the new Polish Act on Industrial Property Law, does not include a provision that would regulate differently the question of the trade mark application, in relation to its subjective and objective elements and that would take into account as authoritative another, later, point in time. Moreover,the adoption at of a later date to assess the qualifications of the applicant, not only would provide an option for revalidation of trade mark applications that were filed in contradiction with the law, or principles of social coexistence (in bad faith), but may also violate other laws. The filing date of an application for the registration of a trade mark should be taken into account when assessing whether the applicant has acted in bad faith, not the date of trade mark registration. The judgment is not final yet.

Trade mark law, case VI SA/Wa 601/10

December 21st, 2010, Tomasz Rychlicki

The Polish company Producent Okien i Drzwi z PVC “OKLAND” Joanna Wilk i Wojciech Wilk Spółka Jawna from Kostomłoty Pierwsze filed a request for invalidation of the right of protection for a word-figurative trade mark Okland R-154904 owned by OKLAND Spółka z o.o. from Rokitki, in regard to the goods in Class 19, wooden windows. The company from Kostomłoty Pierwsze claimed it operates since 1 June 1997. Its business activities include the production of windows and doors of PVC in the four southern voivodeships. The company argued that the simultaneous use of the OKLAND sign in its company name and as a trade mark registered for a different entrepreneur may increase the risk of misleading the public, which includes in particular the risk of association between signs. The Polish Patent Office invalidated the right of protection. Okland from Rokitki filed a complaint against this decision.

R-154904

The Voivodeship Administrative Court in Warsaw in its judgment of 31 May 2010 case file VI SA/Wa 601/10 held that the registration of a trade mark that is identical or similar to a company name of another entrepreneur does not determine, however the infringement of the rights to the company name (the firm). The exclusive rights to the company name are not absolute. The limits of these rights are set by the coverage (territorial and objective) of the actual activity of a given company. The collision between identical or similar signs i.e. a company name and a trademark, may occur only within these limits. The judgment is not yet final.

Trade mark law, case VI SA/Wa 347/10

October 29th, 2010, Tomasz Rychlicki

On 9 July 2005, the Polish Patent Office registered word-figurative trade mark “PERŁY I ŁOTRY SHANGHAJU” R-164275 for Grzegorz Majewski “SINONIS” from Katowice. Michał Gramatyka, Wojciech Harmansa, Adam Saczka and Sławomir Olko filed a request for the invalidation of the right of protection. They claimed that they were members of the music band “PERŁY I ŁOTRY SHANGHAJU”, the band’s name is a common right and therefore the registration of this name as a trademark by Grzegorz Majewski violated the rights of other band members. The applicants alleged that Majewski filed for the registration at a time when he was not an active member of the band and he also knew that “PERŁY I ŁOTRY SHANGHAJU” continues its operation, accordingly he acted in bad faith. Bad faith is also confirmed by the fact that based on the granted right of protection for the trade mark in question, Majewski demanded the cessation of business activity of the other band members. The sign in question is a word-figurative trade mark and similarities that exist may mislead the public with “PERŁY I ŁOTRY” R-194932 trade mark registered for Firma Usługowo-Handlowa HARPEL II Wojciech Harmansa. See also “Trade mark law, case Sp. 211/08“.

R-164275

The Polish Patent Office dismissed the request and concluded that there was no reason to believe that the grant of protection to the trade mark at issue violated the personal rights of applicants if a civil court’s judgment submitted during the invalidation proceedings included a statement that they are not entitled to such a personal right/interest to the band name. The applicants filed a complaint against this decision.

R-194932

The Voivodeship Administrative Court in Warsaw in its judgment of 24 August 2010 case file VI SA/Wa 347/10 annulled the contested decision and ruled it unenforceable. The VAC held that there was a breach of procedural law. The Court held that the PPO, in fact, did not properly examine the request for invalidation. The PPO based its findings only on certain statements issued in the judgment of the Apellate Court in Katowice, and draw more far-reaching conclusions. And so, from the finding of the Appellate Court that plaintiffs have not demonstrated the fact that they are entitled to the name of the band “Perły i Łotry Szanghaju”, the PPO reached a conclusion that the applicants shall have no personal or property rights, and then ruled the argument of acting in bad faith as unfounded. This jugdgment is not final.

Trade mark law, case II GSK 765/09

October 18th, 2010, Tomasz Rychlicki

The Supreme Administrative Court in its judgment of 21 September 2010 case file II GSK 765/09 held that the view that the content and scope of rights as referred to in Article 153 of the IPL were an obstacle to a possible objection by the entities, which do not have rights, which they claim to protect, does not deserve the acceptance.

Article 153
1. The right of protection shall confer the exclusive right to use the trademark for profit or for professional purposes throughout the territory of the Republic of Poland.

2. The term of the right of protection shall be 10 years counted from the date of filing of a trademark application with the Patent Office.

3. The term of protection may, at the request of the right holder, be extended for subsequent ten-year periods in respect of all or of a part of the goods.

4. The request referred to in paragraph (3) shall be submitted before the expiration of a running protection period, however not earlier than one year before the expiration thereof. The request shall be submitted together with the payment of a due protection fee.

5. The request referred to in paragraph (3) may also be submitted, against payment of an additional fee, within six months after the expiration of a protection period. The said time limit shall be non-restorable.

6. The Patent Office shall make a decision on refusal to extend the term of protection for a trademark, where the request has been submitted after the expiration of the time limit referred to in paragraph (5) or the due fees referred to in paragraphs (4) and (5) have not been paid.

The legislature thus entails exclusive rights to the use of the trade mark for the profit or professional purposes and filing the opposition is not a form of use of the mark as shown above. The same conclusions may be reached while interpreting the provisions included in Article 296(2) of the IPL, in which the legislature combines the scope of trademark protection in the form of civil claims with the use of signs in business, while the opposition is not an action in the context of economic activity.

Article 296
2. Infringement of the right of protection for a trademark consists of unlawful use in the course of trade of:
(i) a trademark identical to a trademark registered in respect of identical goods,
(ii) a trademark identical or similar to a trademark registered in respect of identical or similar goods, if a likelihood of misleading the public, including in particular a risk of associating the trademark with a registered trademark, exists;
(iii) a trademark identical or similar to a renown trademark registered for any kind of goods, if such use without due cause would bring unfair advantage to the user or be detrimental to the distinctive character or the repute of the earlier trademark.

Given those conditions, the exclusive rights of trademark protection does not cover the monopoly beyond the boundaries of economic activity or, in other words, use of the mark for the profit or professional purposes. The opposition remains outside the so-defined borders. This case concerned LORD R-88669 trade mark owned by REKORD S.A.

Trade mark law, case VI SA/Wa 203/10

October 11th, 2010, Tomasz Rychlicki

The Polish company INTERKOBO Sp. z o.o. filed a request for the invalidation of the right of protection for the trade mark kucyk pony R-139097 that was registered for HASBRO POLAND Sp. z o.o. Kucyk means “pony” in Polish language. INTERKOBO argued that it has the legitimate interest in the invalidation proceedings because it is a manufacturer of toys, and it offers products such as toy ponies. In addition, in the cease and desist letter dated on 24 April 2007, HASBRO called INTERKOBO to stop the infringement of the right of protection for trade mark “kucyk pony” R-139097 which consisted of using by the INTERKOBO of “Princes’ s Pony” sign for designation of ponies’ toys. INTERKOBO argued also that HASBRO restricts the freedom of economic activity of its competitors, asking them to stop marketing of toys in the form of a small pony and requesting destruction of such products. By registering of the trade mark in question HASBRO had the intention of its use in isolation from the goods for which it was registered, and the intention of closing the access to the market for its competitors, the more that HASBRO as a professional market player should knew or should have known that the term “kucyk pony” as used for the toys in the form of a pony does not have any sufficient distinctiveness. INTERKOBO stressed that HASBRO Sp. z o.o. is a part of capital group operating on the global toys market, which is the position that allows it to dominate the market for local manufacturers of toys and contrary to the scope of the use made of registration to combat competition, which is contrary to the principles of the social coexistence. HASBRO claimed that its sign is used on the Polish market, on the packaging of “kucyk pony” toys and other materials, since 1998 and is the subject of a number of marketing activities, and the brand “kucyk pony” includes not only toys, but also videos and a monthly magazine for children. HASBRO argued that its trade mark has a strong distinctive character and can be regarded as a reputable one, in relation to the goods it designates it has the so-called primary distinctive character. The Polish Patent Office dismissed the request. INTERKOBO filed a complaint against PPO’s decision.

The Voivodeship Administrative Court in Warsaw in its judgment of 24 June 2010 case file VI SA/Wa 203/10 affirmed this decision and dismissed the case. The VAC held that the trade mark in question is is a fanciful sign and has the primary distinctive character. It is not a generic name of any of the listed goods, and it does not inform about their properties. Pony (in Polish: kucyk) is the generic name of the horse species while it is not the name of the goods protected by the trade mark, which goods do not have any direct connection with any species of horses.

Trade mark law, case VI SA/Wa 839/09

August 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative in its judgment of 5 August 2010 case file VI SA/Wa 839/09 decided on the complaint of the holder of the Polish trademark registration DSC R-82966 against the decision Sp. 2/98 of the Polish Patent Office of 28 January 2009 on invalidation of this trademark.

R-82966

The VAC has not examined substantive issues of the matter because as it has stated the decision of the Polish Patent Office is too general and it does not specify documents on which the Polish Patent Office has based its findings. In the Court’s opinion the Polish Patent Office quoting his findings has only used the phrase “it results from the submitted documents that…”, instead of giving precise description of each relevant document, which prevents the Voivodeship Administrative Court from presenting its opinion on the correctness of the questioned decision. In view of above, the complaint has been accepted and the matter has been transferred to the Polish Patent Office for reexamination.

Trade mark law, case II GSK 746/09

August 10th, 2010, Tomasz Rychlicki

This is the continuation of a story decribed in “Trade mark law, case VI SA/Wa 2284/08” that concerned the trade mark HERITAGE FILMS. The Supreme Administrative Court in its judgment of 10 August 2010 case file II GSK 746/09 dismissed the cassation complaint brought by Zygmunt Piotrowski. The SAC held inter alia that the provisions of the TMA or the IPL do not provide in the course of the litigation proceedings lead by the Polish Patent Office, for the possibility to control the legality of the administrative proceedings that concerned the registration of a given trade mark. The legality of a decision granting the right of protection should be challenged in different proceedings.

Heritage

The Court noted that Mr Piotrowski confused the concepts of “invalidation of the registration right” or “invalidation of right of protection for a trade mark” with the annulment of the decision on the granting of the right. There are different grounds for such decisions and other procedures on their issuance, but in case of the breach of the provisions listed in Article 29 of the Trade Marks Act, those conditions may overlap, and only in this case they might be raised in the opposition proceedings. Consequently, the invaliditon of the protection right, although identical in its consequences, cannot be identified with the institution of the annulment of the decision on the granting of the right of protection.

Trade mark law, case VI SA/Wa 808/10

July 28th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its order of 28 June 2010 case file VI SA/Wa 808/10 ruled that according to article 143 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with later amendments, the Polish Patent Office shall publish a trademark application immediately after the expiration of three months from the date of filing of that application. As from the date of publication any third parties may acquaint themselves with the trademark determined in the application and with the list of the goods for which the mark is intended. They may also submit to the PPO their observations as to the existence of grounds that may cause a right of protection to be denied. Therefore, anyone has the right to submit comments to a trade mark application, but filing such comments does not make someone a party to the examination proceedings. These observations are only material that will be taken into consideration when examining the trade mark application

The VAC also noted that according to article 246 of the IPL any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a right of protection within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, and according to article 164 of the IPL, the right of protection for a trademark may be invalidated in whole or in part at the request of any person having a legitimate interest therein, provided that that person is able to prove that the statutory requirements for the grant of that right have not been satisfied. In such cases, the person is a party to the proceedings. This case concerned Gobired trade mark R-222675 owned by Przedsiębiorstwo Handlowo-Usługowe MAREL PLUS Leszek Marcinowski from Gdańsk.

Trade mark law, case VI SA/Wa 2038/09

July 14th, 2010, Tomasz Rychlicki

Polish company Przedsiębiorstwo POLMOS Białystok Spółka Akcyjna, the owner of word-figurative and 3D trade mark “POLMOS ŻUBRÓWKA BISON BRAND VODKA” R-62081 and 3D trade mark R-85811, filed a notice of opposition to a final decision of the Polish Patent Office on the grant of the right of protection to word-figurative and 3D trade mark “VODKA Herbe de Pologne” R-155144, registered for BELVEDERE S.A.

R-62081

POLMOS argued, inter alia, that there is a significant visual similarity between trade marks at issue. Its bottle has a blade of grass, which is very dominant and attracts the attention of the average consumer. Such assessment cannot be undermined by the fact that there are few blades of grass in the bottle representing the questioned trade mark. POLMOS argued that the registration of “VODKA Herbe de Pologne” threatens the reputation of its trade marks, and emphasized the role of grass in the bottle as a motif indicating the origin of the product. POLMOS added that the purpose of BELVEDERE’s actions was the parasitic use of the reputation of earlier trade marks owned by POLMOS.

In the opinion of the Polish Patent Office (PPO) these trade marks were visually dissimilar because of different bottle shape, color, the presence of a label in the contested mark and the lack of labels in the opposed one, number and appearance of components in liquid. These signs were incomparable in the phonetic/aural aspect, so they were also dissimilar, as the opposed trade mark lacks lettering. In the conceptual aspect the questioned trade mark contains a bunch of herbs inside the bottle and the word “herbe” which indicates that the vodka is herbal, and the opposed sign, contains a longitudinal component, but this element in general is not like weed-grass. Consequently, due to lack of similarity the PPO held that the opposition is unfounded. POLMOS filed a complaint.

The Voivodeship Administrative Court in Warsaw in its judgment of 27 April 2010 case file VI SA/Wa 2038/09 held that in the case of trade mark reputation, a sign has to be examined as a whole, as the right of protection was granted for such a designation. It can not be allowed to examine every element of the sign separately, in isolation from the whole trade mark.

R-155144

The Court also ruled that the similarity of signs is a prerequisite for examining whether in a particular situation there was infringement of the reputation of an earlier mark. See “Trade mark law, case II GSK 207/07“. The VAC held that the absence of the similarity of signs, which also includes the possibility of their association, is the argument that the presence on the market of goods bearing the sign at issue will not affect in any way the alleged reputation and distinctive character of POLMOS’ trade marks.

Trade mark law, case II GSK 608/09

July 13th, 2010, Tomasz Rychlicki

The Voivodeship Administrative Court in its judgment of 19 March 2009 case file VI SA/Wa 1888/08 ruled that the consequence of the transfer of trade mark rights to another party, is that its previous owner is not allowed to continue to invoke the claims of the infringement of these trade marks. However, such a possibility is not excluded if the assignment of the trade mark rights will include appropriate provisions authorizing the previous owner of the trade mark to continue proceedings in which it claimed it has rights to assigned trade marks.

R-149940

The Supreme Administrative Court in its judgment of 13 May 2010 case file II GSK 608/09 repealed the contested judgment and returned it to the VAC for further reconsideration. The SAC held that at both the opposition proceedings as referred to in article 246 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No 119, item 1117, with subsequent amendments, that served as the basis for the decision to refuse to grant a right of protection, and subsequent proceedings before the Polish Patent Office under litigation for invalidation of a right of protection, due to the recognition by the proprietor of a trade mark that the opposition is to be unfounded, the applicant who wants to support the opposition does not have to show the legal interest.

Article 246
1. Within six months from the publication in “Wiadomości Urzędu Patentowego” of the mention of the grant of a title of protection, any person may give reasoned notice of opposition to a final decision of the Patent Office on the grant of a patent, a right of protection or a right in registration.
2. The opposition referred to in paragraph (1) may be filed on the same grounds, on which a patent, a right of protection or a right in registration may be invalidated.

This case concerned the invalidation proceedings of the trade mark CARLO BOSSI R-149940 that was registered for goods in Class 3 by KIVI Dr Krzysztof Słoń from Izabelin Laski.

Trade mark law, case VI SA/Wa 274/09

December 3rd, 2009, Tomasz Rychlicki

In a decision of 20 June 2008, the Polish Patent Office (PPO) invalidated the right of protection for “Logos Travel Mark Śliwka” R-169277 trade mark owned by LOGOS TRAVEL MAREK ŚLIWKA SPÓŁKA JAWNA Magdalena Śliwka, Marek Śliwka. A request for invalidation of the right of protection was filed by Biuro Turystyki Związku Nauczycielstwa Polskiego LOGOSTOUR Sp. z o.o. from Warszawa – the holder of “LogosTour LT” R-74232 trade mark that was registered with priority from 15 July 1991. LOGOSTOUR company claimed that Mr Marek Śliwka cooperated with it since 1994 as a local representative and under a contract, which came into force on 1 January 1995 and the additional agreement of 9 April 2002 he was allowed to use the “LogosTour LT” trade mark. The PPO found that “Logos Travel Mark Śliwka” was applied in bad faith. Mr Śliwka filed a complaint to the Voivodeiship Administrative Court in Warsaw (VAC) arguing that there was no bad faith on his side and there is no likelihood of confusion with regard to disputed trade marks.

The VAC in a judgment of 23 June 2009, case file VI SA/Wa 274/09, ruled that the application for the right of protection for a trade mark is made in bad faith, despite the knowledge or ignorance, resulting from an absence of diligence, about the existence of another’s right or interest that is worth of protection, which can be threatened, and with the intention of harming these interests. The overall assessment of the likelihood of confusion as it concerns the visual, aural or conceptual similarity of the marks in question must be based on the overall impression, taking into account, in particular, their distinctive and dominant components.

This judgment is not yet final. A cassation complaint may be filed to the Supreme Administrative Court.

Trade mark law, case VI SA/Wa 2284/08

April 20th, 2009, Tomasz Rychlicki

In 1990, Zygmunt Piotrowski who is a well-known Polish graphic artist, created the logotype that depicted the porch with columns and attic finial of the Penderecki’s house in Lusłwice with “heritage” inscription underneath. It was created for the Heritage Promotion of Music and Art company, whose founders were Elżbieta Penderecka and Janusz Pietkiewicz, later the director of the Polish National Opera. The logotype was adopted by the Heritage Films company that was founded in 1991 by Janusz Pietkiewicz and Lech Rywin after the withdrawal of Elżbieta Penderecka from Heritage Promotion of Music and Art company.

Heritage

At the request of Heritage Films, the Polish Patent Office in its decision of 27 June 2001, case no. Sp. 3/97 invalidated the word-figurative trade mark Heritage R-87806 belonging to the Piotrowski’s company. The Supreme Administrative Court in its decision of 14 December 2001 case file II SA 3446/01 confirmed the decision of the PPO, and dismissed the cassation complaint. The SAC clearly stated that the English word “heritage” is not a generic term for the services it was registered for, nor does it inform about its properties, quality or usefulness. Therefore “heritage” word can be used as a trade mark. It is not widely known or used in the market in order to identify such services as impresario and management consultancy services, the recruitment and placement of people for work for orchestra, soloists and artists of various disciplines of art. However, the court held the the company name could be an obstacle to grant the rights of protection for a trade mark. It was unclear for the SAC why the PPO’s decision lacks the explanation as to why the picture of the porch with the HERITAGE inscription makes the right to the company name (which was existing from 1991) impossible to be applicable as grounds for the invalidation. If the reason would be the recognition of the word HERITAGE to be protected by copyright law as the title, it should be better clarified. It was more necessary for the Court because the title could benefit from the copyright protection “only in very exceptional circumstances”.

The case went back to the PPO. On 17 April 2002, the Polish Patent Office invalidated of the right of protection of the trade mark HERITAGE R-87806. One more time Mr Piotrowski filed a complaint before the Supreme Administrative Court. The SAC in its judgment of 12 March 2003 case file II SA 1867/02 ruled that in accordance with the general rules, in the event of a collision between company name (the firm) and trade mark that has been registered with the “later precedence”, the priority shall be given to the right that existed earlier.

A year later, the Polish Patent Office registered the trade mark Heritage Films R-151966. Zygmunt Piotrowski has requested the invalidation proceedings argued that the trade mark Heritage Films infringes on his personal and economic rights afforded by the copyright law. The PPO rejected the request claiming the word “heritage” is a common expression and regardless of its importance for the artist it is not eligible for the copyright protection. Piotrowski filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 15 April 2009 case file VI SA/Wa 2284/08 ruled that the word “heritage” has no distinctive character and may be registered only in composition with some other description. And because it is not a subject of copyright protection the request had to be dismissed. Zygmunt Piotrowski has already announced he is going to file a cassation complaint.

Trade mark law, case II GSK 385/08

November 14th, 2008, Tomasz Rychlicki

On 26 June 1996 the Polish company “Sniezka” Chłodnia from Częstochowa applied for the figurative trade mark in Class 30 for goods such as ice creams. The graphic represented a black boy’s head. On 10 September 2001, the Polish Patent Office granted the right of protection R-132332.

R-132332

On 31 July 1998, the Lodmor company from Gdansk applied for word-figurative trade mark “calypso lody smietankowe waniliowe LODMOR” Z-190131 in class 30 for goods such as ice creams, ice cream powder, ice cream binders. The PPO rejected Lodmor’s application justyfing its decision on priority of the “Sniezka” company’s trade mark.

Z-190131

Lodmor filed a request for trade mark invalidation. The company from Gdańsk claimed that “Sniezka” illegally appropriated a sign of a black boy’s head, which was put on Calypso ice creams in the ’70s and ’80s by companies that were part of the Union of the Freezing Industry (Lodmor is a legal successor of one of them). The PPO has invalidated “Sniezka” trade mark in 2006. The Office ruled that this sign was registered in contrary to principles of merchant’s honesty because the mark was already used for a long time by other entrepreneurs.

“Sniezka” Chłodnia company appealed. The Voivodeship Administrative Court in Warsaw in its judgment of 17 October 2007 case file VI SA/Wa 1005/07 held that Lodmor had no legal interest in filing a request for trade mark invalidation. The Court annulled PPO’s decision. The VAC held that the concept of legal interest in invalidation proceedings can not be derived from the fact that one company applies for a trade mark protection and there is an obstacle in the form of earlier registration. Such conclusion would lead to negation of principles that are the basis for granting rights for trade mark protection. In this case the interest involved only economic issues.

Lodmor filed a cassation complaint. The Supreme Administrative Court in its judgment of 23 October 2008, case file II GSK 385/08 agreed with Lodmor’s arguments that VAC only referred to the trade mark application and it did not consider Lodmor’s legal interest. The SAC already issued decisions and opinions as regards the breach of principles of mercantile honesty and the bottom line of each ruling was that, in specific circumstances, a legitimate interest of a competitor may be found, as it was in Lodmor’s case. The Court held that every entrepreneur has the right to designate its products and services, with a trade mark, if it does not remain in conflict as to the form, duration and territorial aspect, with the absolute right that was previously obtained by another entity. An entrepreneur has a legal interest in the request for invalidation of the right of protection for a trade mark on the basis of circumstances provided in the request and conditions included in such a motion if the right of protection was granted in violation of the statutory requirements. The relevance and application of these conditions shall be assessed in proper proceedings. Therfore, the SAC returned the case to VAC for further reconsideration.

Trade mark law, case II GSK 127/07

October 5th, 2007, Tomasz Rychlicki

The Supreme Administrative Court in a judgment of 20 September 2007, case file II GSK 127/07, unpublished, ruled that other requirements must be satisfied while starting the invalidation proceedings, and the other in the request on the lapse of a right of protection for a trademark. The right of protection for a trademark right may be invalidated in whole or in part, if it has been granted contrary to the statutory conditions (as defined in article 164 of the Polish Act of 30 June 2000 on Industrial Property Law – IPL – (in Polish: ustawa Prawo własności przemysłowej) of 30 June 2000, published in Journal of Laws (Dziennik Ustaw) of 2001 No. 49, item 508, consolidated text of 13 June 2003, Journal of Laws (Dziennik Ustaw) No. 119, item 1117, with later amendments), and the lapse of a right of protection is dependent on the occurrence of other, well-defined conditions (articles 168 and 169 of the IPL). Also the implication of each of these decisions differs – at the ex tunc in the invalidation proceedings, and after fixed period or the occurrence of a particular situation constituting a condition of the lapse.

Trade mark law, case II GSK 247/06

August 11th, 2007, Tomasz Rychlicki

This is the continuation of a story described in “Trade mark law, case VI SA/Wa 1705/05“. This judgment concerned the figurative trade mark TERRAVITA R-142204. The Supreme Administrative Court in its judgment of 20 February 2007 case file II GSK 247/06 dismissed a cassation complaint brought by the K. Company.

R-142204

The Court ruled that it cannot be assumed that in case of word-figurative signs, a word element of a such sign has a decisive character because it’s easy to remember and to communicate. While assessing the similarity of signs one has to take into the consideration a general impression which compared signs exert on the consumer. I’m still not so certain if this trade mark (trapezoid box/packaging for a bar of chocolate with characteristic rectangle “window” at the front which allows the consumer to see the texture of the chocolate) should be perceived as “trade dress” as it was discussed by the SCOTUS in its judgment in the case Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). Maybe it is a three-dimensional sign/trade mark (3D).

Trade mark law, case II GSK 377/05

October 6th, 2006, Tomasz Rychlicki

The Polish Patent Office invalidated the right of protection for word-figurative trade mark OCETIX R-135047 based on provisions of Article 8(2) of the old Polish Act of 31 January 1985 on Trade Marks – TMA – (in Polish: Ustawa o znakach towarowych), published in Journal of Laws (Dziennik Ustaw) No 5, item 15, with subsequent amendments. The request was filed by the competitior of Szczęsna Ewa DELTA L.T.D, who claimed its prior rights to the company name (firm).

Article 8
A trademark shall not be registrable if:
1) it is contrary to law or to the principles of social coexistence;
2) it infringes the personal or economic rights of third parties;

Ewa Szczęsna filed a complaint against this decision. The Voivodeship Administrative Court in Warsaw in its judgment of 20 July 2005 case file VI SA/Wa 67/05 dissmissed the case. The VAC agreed with the PPO that the registration of the word-figurative trade mark OCETIX constituted the infringement of the firm of the competitor of Ewa Szczęsna, who established its undertaking in 1991. The Court ruled that the dominant element is the word OCETIX, it attracts the attention and has the distinctive character, while other elements are informative and are indicating the scope of the activities of Szczęsna Ewa DELTA L.T.D.

The Supreme Administrative Court in its judgment of 5 April 2006 case file II GSK 377/05 upheld the contested judgment and ruled that in accordance with Article 164 of the IPL, the right of protection for a trade mark may be invalidated at the request of any person who has legitimate interest. Article 315(3) of the IPL provides the principle according to which the registrability of signs registered or applied for the registration before 22 August 2001, is assessed on the basis of existing regulations. Thus, the law underlying the assessment of trade mark protection for OCETIX that was applied for the registration on 14 October 1998 are the provisions of the TMA.

R-135047

The SAC repeated that the right of protection for a trade mark is deemed as an exclusive, absolute, transferable and heritable property right. It’s a sign intended to distinguish the goods of one undertaking from those of the same type from another entrepreneur. A trade mark performs a distinctive, warranty and advertising functions. The Court noted also that in the course of trade, the category of distinctive signs, in addition to trade marks, are also brands/signs that are distinguishing of companies. The firm is one of such signs. It is the name under a which the registered merchant (general partnership, limited partnership, limited liability company, joint stock company) operates its undertaking. The firm of an undertaking distinguishes a given undertaking from other undertakings, in the same and/or other object/way of business. See R. Skubisz, Prawo znaków towarowych. Komentarz (in English: Trade mark law. Commentary), Warszawa 1997, p. 13 and 17. The Court also ruled that the Paris Convention of 20 March 1883 on the Protection of Industrial Property, published in Journal of Laws (Dziennik Ustaw) of 1975, No. 9, item. 51 and 52), introduced to the Polish law the term of the trade name, which previously was not used in the Polish legislation. The term collectively covers all the markings of companies enjoyed by the persons mentioned in Articles 2 and 3 of the Convention. The SAC agreed that Article 8 of the Convention does not constitute an independent basis to protect the trade name of the entrepreneur, because it does not specify conditions for such protection and does not indicate what claims should be used in the case of infringement of the rights to the company name. However, this affect the domestic law. See also “Trade mark law, case II SA 2914/01“. The Court ruled that the firm is protected under the Article 37 Code of Commerce (it was repealed by the Code of Commercial Companies later on) and Article 43 of the Civil Code. According to Article 37 of the Code of Commerce, the protection of the firm arises upon its entry into the commercial register, and will expire on the date a court order to withdraw its registration from the register comes into force. The infringement of the firm occurs if there is unlawful use by unauthorized person of a sign which does not distinguish definitively from the firm in a given locality (Article 37 in connection with Article. 35 of the Code of Commerce). Pursuant to Article 43 of the Civil Code, the firm is subject to the protection provided for personal rights/interests (Articles 23 and 24 of the CC). This protection arises from the date of the first use of a firm in business.

Trade mark law, case VI SA/Wa 1514/04

August 11th, 2005, Tomasz Rychlicki

The Voivodeship Administrative Court in Warsaw in its judgment of 28 July 2005 case file VI SA/Wa 1514/04 held that the invalidation of a right of protection for a trade mark serves as a correction of an error that was made by granting such right. The only condition for the invalidation is the failure to comply with statutory requirements that are required for the grant of such right. The right of protection applies to the entire trade mark as it was provided in the application, and subjected to registration. The law does not protect a part of a word trade mark, but covers the whole sign and protect it, in such form, in which the trade mar was applied for and registered. This case concerned DELITKI R-94582 trade mark.